Posts Tagged ‘Klopfenstein’

Yesterday a panel of Judges (Lourie, Reyna and Wallach) in Voter Verified, Inc. v. Premier Election Solutions, Appeal nos. 2011-1559, 2012-1016 (Fed. Cir. November 5, 2012) expanded on the Fed. Cir.’s earlier decision In re Lister, 583 F.3d 1307 (Fed. Cir. 2009)(archived under “Prior Art”), which in turn cited In re Klopfenstein, 380 F.3d 1345 (Fed. Cir. 2004), to affirm a district court’s holding that a patent on “a self-verifying voting system” was obvious in view of an article (the “Benson article”) that had been posted on the “Risks Digest Website” well prior to the 102(b) bar date.

Noting that the “key inquiry is whether the reference was made ‘sufficiently available to the public interested in the art’ before the critical date”, Klopfenstein was quoted as establishing that “Whether a reference is publicly available is determined on a case-by-case basis based on the facts and circumstances surrounding the reference’s disclosure to member of the public.”

In re Lister, the Federal Circuit repeatedly cited In re Klopfenstein, 380 F.3d 1345 (Fed. Cir. 2004) (link below), a decision that held that a poster presentation that was available for viewing at a meeting for 2-3 days was a “printed publication” under 102(b). This decision has lots of interesting dicta that indicates, for example, that a slideshow with an oral presentation would not necessarily be considered a “printed publication” if no printed copies were available since the slides were only transiently visible. A thesis defense per se would also not be considered a printed publication. Even the brief display of a poster may not qualify as a printed publication, and presentation of the poster at a meeting with a non-copying notice may have disqualified the poster as a printed publication.

So if “your professor” tells you that he or she disclosed the invention in a slideshow or a poster at a scientific meeting, don’t assume that all rights are gone, or even that absolute novelty has been lost abroad. I spoke to a UK associate some years ago who told me that the burden of proof imposed by the court on a defendant who tries to rely on an oral presentation or slideshow as novelty-destroying is extremely high. (I won’t go into detail here, since associates may well differ on this point, and you should contact your own, of course.) ‘Nuff said!